Trade mark infringement carries increased commercial consequences as the power of the branding grows. We solve problems for businesses accused of trade mark infringement. Equally, we bring claims for businesses suffering as a result of trade mark infringement.
How to handle trade mark infringement
Opposing trade mark infringement
Your choices depend upon the stage of the trade mark. You should consider use of the IPO or IPEC.
Intellectual property office
The best way of stopping trade mark infringement is to stop the trade mark from being registered in the first place. The Intellectual Property Office (IPO) deals with registrations and oppositions of trade marks in the UK.
If the trade mark has been registered or is unregistered the best way to stop trade mark infringement is via IPEC in most cases.
Challenge to the IPO can be made to whole or part of a trade mark
You can lodge an opposition to a proposed new trade mark with the Intellectual Property Office relating to the entire or part of any trade mark application. An unregistered trademark holder can oppose a trademark registration application.
Types of trade mark infringement routes
The types of matters heard by the IPO following a challenge are:
- Opposition – claims the trade mark should not be registered;
- Revocation – claims that a registered trade mark should be withdrawn as it infringes an existing trade mark;
- Invalidation – similar to revocation claims in that the basis is an existing trade mark that should no longer operate; and
- Rectification – requests to correct a trade mark. Often used as a solution to prevent trade mark infringement.
Grounds to challenge a trade mark application
The most common grounds to dispute a trade mark application are:
- Descriptive use of services and goods;
- Generic term;
- Non-distinctive; and
- Existence of earlier trade mark.
Appeal from the IPO about trade mark infringement
The route to appeal a decision of the IPO is divided as follows:
- Appointed Person; or
- High Court, Court of Appeal and Supreme Court.
Appointed person – considerations on appeal of a trade mark dispute
An appeal to an “Appointed Person” is a relatively inexpensive process. But the decision is final. This means that it cannot be appealed. We can work discretely in the background to help you present the best case.
Appealing from the IPO to a court is often more costly and could taker longer to decide than the “Appointed Person” route. But, appeals to court are a gateway to having points of law determined by the highest authorities.
Registered trade mark infringement
Disputes about registered trade mark infringement are usually run through IPEC.
You will be in a stronger position when it comes to enforcing a trade mark or defending an alleged infringement if your trade marks are registered. The holder of a trade mark can enforce:
An exclusive use of the trade mark
Exclusive use covers the goods and services for which it is registered.
The right to commercially exploit the trade mark
For example to:
- Grant licences,
- Assign or sell the trade mark,
- Renew the trade mark indefinitely: generally every 10 years;
The right to sue anyone for trade mark infringement
For example the right to pursue anyone who is using:
- A similar or identical trade mark on similar or identical goods without authorisation, or
- Where the use has caused, or is likely to cause, confusion.
Scope of trade mark infringement
The trade marks rights can be registered or unregistered. Ownership of a trade mark can extend over:
- Group of words, label, slogan, name, group of letters;
- Logo, symbol, design; distinctive package, 3D mark;
- Domain name;
- Gesture; or
Unregistered trade mark infringement – passing off
Trade mark infringement disputes relating to unregistered trade marks are dealt with in IPEC. We can start the process off by issuing a letter before action. Or, review and defend a letter before action you have received.
It is harder to enforce an unregistered trade mark than to protect a registered trade mark. Enforcing an unregistered trade mark relies on the common law rules of “passing off”.
- The underlying principle of passing off a trade mark infringement claim is that ‘a man should not sell his own goods under the pretence that they are the goods of another man’.
If you discover that your trade mark is being infringed there are immediate steps to take. Delay does risk a potential ability to demonstrate a “passing off” claim.
Test for establishing a passing off claim
Passing off involves a three-part test. There must be:
Goodwill attached to the trade mark;
A misrepresentation directly or indirectly to the public as to ownership of the trade mark
- It doesn’t matter if the misrepresentation is intentional or not; and
Damage to the original trade mark owner such as:
- loss of profit;
- damage to reputation; and
- loss of an opportunity to expand.
Defending trade mark infringement allegations
We have years of experience in batting off allegations of trade mark infringement. Often a robust response pointing out the difficulties the claimant will face is sufficient. Many cease and desist letters also known as letters before action are automatically generated using computer and artificial intelligence. There is little human intellectual thought behind them. We find such claims are often unfounded and without merit.
Building the defence to trade mark infringement
Pointing out the stumbling blocks the other side will have to get over is a good starting point. That is where we attack the strength of many trade mark infringement allegations.
In our experience defences can often be built around:
For registered trade marks
- Insufficiency of evidence;
- Out of date or obsolete trade mark registrations which do not infringe your trade mark;
- Inability to prove loss. Establishing damages is a particularly difficult area; and/or
- Failure to establish the grounds necessary to apply for an injunction.
For unregistered trade marks – passing off
- The three stage test to establish a passing off claim is not made out;
- The party accused of passing off actually does own the trade mark and has some documentary evidence;
- The claimant cannot establish that it has built up a reputation in the mark; and/or
- No damage has been suffered.
Special consideration for sole directors
A sole director of a company can be held jointly liable along with the company for trade mark infringement and passing off. This is because a court can view a sole director as having full responsibility for acts done by the company.
A sole director will need to show the court that he did not knowingly participate in, or control, the activities amounting to infringement. If the director is unable to demonstrate this, he may be held personally liable for the trade mark infringement.
Trade mark infringement solutions
There are a range of solutions to consider where a trade mark is infringed. Common solutions we find include:
Injunction to stop the trade mark infringement
Applications can be made to court for an injunction. An injunction ordered by the court means the infringer must stop his infringement or face further court action. If the infringer ignored the injunction issued by the court, the worst case scenario for the infringer is that they could be made bankrupt.
Settlement outside of court
In practice, we find for a great majority of cases, that resolution to trade mark infringement is often outside of court. Solutions outside of court are encouraged by the courts including IPEC as they save time and money.
We also find that before settlement is achieved there may be a need for robust letters setting out the law relating to the trade mark infringement. The intention is to warn the opponent of what lies ahead if the case is not settled.
We do achieve settlement agreements whereby the infringer agrees not to repeat. A well drafted settlement agreement means, if there is a repeat, an injunction against the infringer is more likely to be obtained from court without delay.
Recent trade mark infringement cases resolved
- Defended allegations of trade mark infringement for an established fashion retailer, which coincided with a new season’s product launch.
- Defended trade mark application against a third party’s claim for invalidity. The party alleged bad faith and “monopoly holding” intent. We asserted that our client’s application was made in good faith with commercial intent.
- Protected community trade mark holder from pan-European infringement by a number of entities.
- Defended a start-up health drinks company against allegations of passing off. We asserted our client’s mark differentiated from the claimants. In addition, we showed the claimant had little goodwill in the mark, therefore no damage had been caused.